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The UK government has announced that it intends to proceed with changes to UK legislation governing the “address for service” that may be used for intellectual property rights, with associated legislation currently being laid before Parliament. An address for service is a correspondence address given to the UK Intellectual Property Office (UKPIO) by proprietors of IP rights. Usually the IP attorney of the proprietor is listed as the address for service. Currently, any address in the European Economic Area (EEA) is accepted.
The changes will require use of a UK, Gibraltar or Channel Islands address for service in relation to all new trade mark, design and patent applications, new contentious matters and new proceedings in relation to existing IP rights for which an address for service is required. For example, any application to register an address for service for the UK part of a European patent before the UKIPO will need to specify a UK, Gibraltar or Channel Islands address. The planned amendments will remove the reference to the EEA. The new rules are expected to come into force on 1 January 2021, subject to the parliamentary timetable and passing of the legislation.
The new rules will not apply to applications or proceedings that are already pending before 1 January 2021. They will also not apply to the renewal of granted rights, for which an address for service is not required. The rules will include transitional provisions for ongoing cases, details of which have not been fully laid out.
The planned changes will not in the first instance apply to comparable UK trade mark and design rights that are created from EU trade mark and design rights under the current provisions of the Withdrawal Agreement between the UK and the EU (so-called “cloned” rights). All UK comparable trade mark and design rights that will be automatically created on 1 January 2021 will not be required to have a UK or Channel Islands address for service for three years following the end of the transition period (Article 55(2) of the Withdrawal Agreement). However, the address for service changes will apply to UK trade mark and design applications that stem from EU applications pending before the European Intellectual Property Office on 1 January 2021, or registered EU designs that are subject to deferred publication, and for which a new UK application is required.
The planned changes to address for service rules may require changes to existing users’ procedures for filing UK patent, trade mark and design applications and undertaking other proceedings before the IPO, such as registering an address for service for the UK part of European patents. Detailed guidance to businesses in relation to impact of the changes has been provided by the Government. Please contact your usual J A Kemp attorney if you have any questions regarding the implications of the changes for your current practice, or would like assistance with recording a UK address for service for UK IP rights.